Thomas J. Engellenner is a partner in the Intellectual Property Department of Pepper Hamilton LLP, resident in the Boston office. Mr. Engellenner’s practice includes patents, licensing, trademarks, copyrights and litigation. He has particular expertise in the fields of biotechnology, pharmaceuticals and medical devices.
Mr. Engellenner more than 25 years of experience in prosecuting and litigating patents and advising clients generally on intellectual property strategies. His litigation experience includes patent infringement cases in the U.S. federal courts, Canada, the Tokyo District Court in Japan and the Dusseldorf Federal Court in Germany, as well as opposition and validity challenges hearings before the Japanese, European and German patent offices.
Prior to joining Pepper, Mr. Engellenner was a partner with Nutter McClennen & Fish LLP in Boston, where he was chair of the firm’s Life Sciences Practice Group and co-chair of the firm’s Patent Practice Group.
Mr. Engellenner began his career as a trial attorney for the U.S. Environmental Protection Agency. Prior to entering private practice, he worked for the Massachusetts Institute of Technology as a patent and licensing attorney in the Office of Technology Licensing. Since entering private practice, Mr. Engellenner has obtained over one hundred patents for MIT.
Mr. Engellenner’s experience includes:
Mr. Engellenner is listed in Chambers USA: America’s Leading Lawyers for Business and was named to the 2004-07 Massachusetts Super Lawyers lists.
- participation in numerous European patent oppositions and U.S. patent reexamination proceedings on behalf of life science and high tech clients
- outside IP counsel for world-famous institute of regenerative medicine
- representation of a client as a defendant accused of patent infringement in an International Trade Commission proceeding and secured a judgment that no exclusion order was warranted based on public interest factors
- representation of a life sciences company in a Federal Trade Commission antitrust investigation that resulted in a dismissal without penalties or admission of wrong doing
- representation a life science company in a misappropriation of trade secrets case, which settled on favorable terms (client obtained a royalty-free co-exclusive license to patent rights filed by subsequent employer of the client’s former employee)
- assisting a client in a nationwide recall of an FDA approved product and representing the client in a subsequent suit against a component manufacturer to recoup the costs of the recall, which was settled on favorable terms via mediation
- assisting a life science client in a sale of its catheter business to a major medical device company for $12.5 million dollars, including term sheet negotiation, due diligence and final asset purchase agreement
- design of a patent strategy and portfolio development for the first company to secure FDA approval in the U.S. for laser vision correction devices; also was a member of the trial team that secured a $17 million dollar jury verdict in a patent infringement suit against a competitor of the client based on one of the patents he drafted
- obtained summary judgment of invalidity for life science company accused of patent infringement
- negotiation of an early settlement of a patent infringement suit whereby plaintiff agreed that client’s re-design of its product would not infringe the patent-in-suit. Case was dismissed with no payment of damages.
Active in the bar, Mr. Engellenner served as president of the Boston Patent Law Association in 2000-01. He is a member of the American, Massachusetts and Boston bar associations, and the American Intellectual Property Law Association. He is a member of the Licensing Executives Society and the Association of University Technology Managers and has served on the editorial advisory board of the AUTM Journal. In the community, Mr. Engellenner is a trustee of the All Newton Music School.
Mr. Engellenner is admitted to the bars of Massachusetts and New York, and before the U.S. District Court for the District of Massachusetts, the Court of Appeals for the Federal Circuit and the U.S. Patent and Trademark Office.